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WIPO to Probe New Issues Relating to Domain Name Abuse

Geneva, July 10, 2000
Press Releases PR/2000/235

Domain name abuse came under the spotlight again this week as the World Intellectual Property Organization (WIPO) accepted a request by a number of countries to go a step further in its work to stamp out the bad faith registration of domain names on the Internet. The aim is to create a stable environment for the further development of electronic commerce and safeguard the interests of owners of rights that are not necessarily based on registered trademarks.

WIPO helped put in place the current Uniform Dispute Resolution Policy (UDRP), which, since December 1999, has been the basis for settling conflicts relating to trademarks on the Internet. The year-long study that led to the implementation of the UDRP by the Internet Corporation for Assigned Names and Numbers (ICANN) noted the need to further study other intellectual property issues as they relate to the domain names system.

A group of countries spearheaded by Australia (Argentina, Canada, Denmark, European Union, France, and the United States of America) has written to WIPO Director General Dr. Kamil Idris requesting the Organization, in line with its mandate to promote the protection of intellectual property rights, to initiate a second round of international consultations to address outstanding issues relating to intellectual property and domain names. Such issues include abusive registrations of trade names, geographical indications and other rights not based on trademarks. This request also calls upon WIPO to draw up a list of best practices to help administrators of country code top level domain name registries (ccTLDs) prevent and resolve domain names disputes.

WIPO Assistant Director General, Mr. Francis Gurry, who oversaw the first WIPO Internet Domain Name Process, welcomed this request and said that the Organization was committed to promoting a reliable environment in cyberspace. "This request marks a new phase in our attempts to establish greater compatibility between identifiers in the real and virtual worlds. In examining personality rights, geographical indications and the other areas mentioned in the request, we will be embarking on more complex, but no less important, legal and policy terrain." Mr. Gurry noted.

The results of this second series of consultations are expected to be submitted to WIPO's member states and the Internet community in the first half of 2001. "Like the first WIPO process, these consultations will be conducted in a balanced and transparent manner. To that end, WIPO invites all interested parties, including intellectual property owners and other members of the Internet community, to participate. The objective, as before, is to achieve consensus among all stakeholders on the issues addressed," said Mr. Gurry. Further information about the second WIPO process, and how to participate, will soon be available on WIPO's electronic commerce web site: http://ecommerce.wipo.int

WIPO will continue to provide ccTLD administrators with advice and guidelines for best practices and related dispute resolution procedures.

Background

In April 1999, WIPO published a series of recommendations in a report entitled "The Management of Internet Names and Addresses: Intellectual Property Issues" (see http://ecommerce.wipo.int). This was the result of a year of intensive consultations - virtual and in person - to address problems caused by the conflict between domain names and trademarks. These recommendations were presented to the Internet Corporation for Assigned Names and Numbers (ICANN), the manager of the technical aspects of the domain name system (DNS). The Uniform Dispute Resolution Policy (UDRP), which went into effect on December 1, 1999, was among the WIPO recommendations implemented by ICANN. The dispute resolution system is now widely regarded as an efficient, quick and cost-effective way to resolve domain name disputes. Over 750 cases have been filed with the WIPO Arbitration and Mediation Center, with more than 345 cases resolved since the beginning of the year.

The first series of consultations targeted only the most problematic tensions between trademarks and domain names, and identified a number of outstanding issues that required further consultation. These include protection of trade names, geographical indications, and other rights that are not based on registered trademarks. The two letters addressed to Dr. Idris and signed by Senator Richard Alston, Australian Minister of Communications, Information Technology and the Arts, and 19 other member states, call upon WIPO to address these outstanding issues and to focus on helping to improve administration of the ccTLDs. Among the issues raised in these letters are the bad faith, abusive, misleading or unfair use of:

  • Personal names; (names of individuals that are targets of abusive registration because they are distinctive or famous)
  • International Nonproprietary Names (INNs); (unique and distinctive generic names of pharmaceutical substances that are selected by the World Health Organization (WHO), and maintained as public property to protect the safety of patients worldwide);
  • Names of international intergovernmental organizations; (which are protected against use and registration as trademarks by the Paris Convention and TRIPS Agreement);
  • Geographical indications, geographical terms, or indications of source; (those expressions of ‘place-goods' connection that give producers in a certain geographical region the right to indicate that their products come from that region);
  • Trade names; (a name adopted by a business enterprise on the basis of its character, separate to its trademarks and service marks, that is used by the business to distinguish its commercial enterprise from others).


Domain Names

Domain names were originally intended to facilitate connectivity between computers through the Internet. However, as they are easy to use and remember, they have come to constitute a form of business identifier. The growing number of cybersquatting disputes reflects the premium businesses are placing on domain names and their potential for facilitating electronic commerce. By using trademarks as their domain names, businesses hope to attract potential customers to their web sites and increase their market visibility. Domain names are now used routinely in advertising as a means of indicating the presence of an enterprise on the Internet.

With the growth of the Internet, domain names have increasingly come into conflict with trademarks. The possibility of such conflict arises from the lack of connection between the system for registering trademarks, on the one hand, and the system for registering domain names, on the other hand. The former system (trademarks) is administered by a public (governmental) authority on a territorial (either national or regional) basis which gives rise to rights on the part of the trademark holder that may be exercised within the territory. The latter system (domain names) is usually administered by a non-governmental organization without any functional limitation and on a first-come, first-served basis. Domain names offer a global presence on the Internet.

Cybersquatters exploit the differences in the two systems by taking advantage of the global, first-come, first-serve nature of the domain names system. Intellectual property rights owners and people who register domain names in good faith have welcomed the UDRP as a cost-efficient and speedy alternative to litigation.

For further information, see Press Release 218 or please contact the Media Relations and Public Affairs Section at WIPO:



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